To: | Shenzhen Apeman Innovations Technology C ETC. (mailroom-ch@mg-ip.com) |
Subject: | U.S. Trademark Application Serial No. 88521477 - ROFFIE - MZC1903891G1 |
Sent: | March 24, 2020 10:06:18 PM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88521477
Mark: ROFFIE
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Correspondence Address: MUNCY, GEISSLER, OLDS & LOWE, P.C.
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Applicant: Shenzhen Apeman Innovations Technology C ETC.
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Reference/Docket No. MZC1903891G1
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: March 24, 2020
This Office action is in response to applicant’s communication filed on March 12, 2020.
This Office action is supplemental to and supersedes the previous Office action issued on October 8, 2019 in connection with this application. The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, applicant’s address appears to be invalid and/or erroneous, and must be clarified or corrected.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.
Applicant must address the issue raised in this Office action, in addition to the issues raised in the Office action dated October 8, 2019. The issue raised in the previous October 8, 2019 Office action is as follows and is maintained: the partial Section 2(d) likelihood of confusion refusal.
Further, the following refusal has been satisfied: specimen of use for International Class 21. See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Address of Record / Domicile Address
• CONTINUED: Section 2(d) Likelihood of Confusion Refusal (Class 9)
Applicant must respond to all issues raised in this Office action and the previous October 8, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
ADDRESS OF RECORD / DOMICILE ADDRESS
All applications must include the applicant’s domicile address. The application record specifies the following foreign street address as applicant’s domicile:
Room 126, Building11, Huanan Avenue No.1
Huanan City International Printing
PAPER PACKAGING, CHINA 518000
“Paper Packaging” does not appear to be a city in China, nor does “Hunan City International Printing” appear to be part of a valid street address.
If the address of record is applicant’s correct domicile, then applicant must provide the recent documentation showing that the address is the applicant’s business headquarters. For example, a current certificate of good standing for the business entity issued by a government agency reflecting the domicile address of record.
Otherwise, applicant may update its email or mailing/domicile address using the TEAS Change Address or Representation form properly signed by the attorney of record. 37 C.F.R. §2.18(c); TMEP §609.02(b).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES TO CLASS 9 ONLY
Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below. Therefore, the refusal of the applied-for mark because of a likelihood of confusion with the marks in U.S. Registration Nos. 5483283 (ROPHIE and Design) and 5719691 (RF ROFI and Design) is maintained and continued. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq .
Applicant argues that if the cited marks can coexist on the register, so too should applicant’s mark be entitled to register. Prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
Applicant argues that “the mere fact that the pertinent marks are pronounced the same way does not make the marks confusingly similar.” Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same; such similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Applicant argues that the design elements in the cited marks, including the stylized RF in Reg No. 5719691 alter the commercial impression such that the cited marks are not confusingly similar with applicant’s mark. The design elements and stylization in the cited marks do not obviate the overall similarity between the marks. The eye design and stylization in Reg. No. 5483283 and the RF design and stylization in Reg. No. 5719691 are not so distinctive as to transform the overall impression separate and apart from the word elements of those marks. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Further, applicant’s mark is in standard characters. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Applicant argues that viewed in their entireties, the marks are not confusingly similar. Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). Viewed in their entireties, the marks are confusingly similar.
Applicant argues that applicant’s goods are directed to remote pet care. Applicant’s goods in Class 9 contain no such limitation, nor is such a limitation present in the cited registrations. The presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all goods and/or services identified in the registration. 15 U.S.C. §1057(b). In the absence of limitations as to channels of trade or classes of purchasers in the goods and/or services in the registration, the presumption is that the goods and/or services move in all trade channels normal for such goods and/or services and are available to all potential classes of ordinary consumers of such goods and/or services. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).
The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).
In principle, evidence comprising only a small number of third-party registrations for similar marks with similar goods is generally entitled to little weight in determining the strength of a mark. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). A few registrations are “not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018). Thus, the few third-party registrations for dissimilar marks submitted by applicant are insufficient to establish that the wording ROFFIE is weak or diluted.
Further, evidence comprising third-party registrations for marks with different or unrelated goods, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.” See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751). Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording ROFFIE is weak or diluted, or that similar marks can coexist without confusion.
Therefore, the refusal under Trademark Act Section 2(d) is hereby maintained and continued.
How to respond. Click to file a response to this nonfinal Office action.
/Alina Morris/
Examining Attorney, Law Office 117
United States Patent and Trademark Office
571-272-2256
alina.morris@uspto.gov
RESPONSE GUIDANCE